A trade mark owner has a legal right to prevent you from using their registered mark without their permission. However, while that is the ‘default rule’, there are many circumstances in which a trade mark owner may not have that right, including the following:
- The own name defence, i.e. if the mark is also your name (i.e. your legal name or any name you are known by or called), bearing in mind that this exception only applies to individuals and not to companies. The rationale behind the exception is that people must be free to use their own name in business without fear of getting sued.
- The descriptive use defence, i.e. if that mark is also a descriptive word (e.g. “Robertson’s Toffee Treat” was found not to infringe a trade mark registration for the word “TREAT” because the word was being used descriptively in the phrase). The rationale behind the exception is that descriptive words must be available to everyone to use in the course of ordinary life and trade, without people having to worry about getting sued.
- The referential use defence, i.e. if you needs to use the mark to tell people about a product/service you provide (e.g. “Buy Ford spares here” would not be an infringement of the “Ford” trade mark, as long as Ford spare parts were actually for sale at the dealership, garage etc.). The rationale behind the exception is that, while trade mark owners must have the exclusive right to use their own brand names/logos, other people and businesses must also have the right to communicate with the public about the products and services they provide (in particular, where they are providing specialist services or spare parts relating to other brands).
- Earlier local rights, i.e. if you also have rights in same mark in your local area (e.g. the name of a local pub). As above, the rationale behind the exception is that, while trade mark owners must have the exclusive right to use their own brand names/logos, other people and businesses must also have the right to protect their own pre-existing rights in their brand names/logos (even if they haven’t acquired registered trade mark protection and have unregistered rights only).
- Exhaustion, i.e. if the owner’s trade mark rights are ‘exhausted’ (e.g. an owner cannot prevent you from using their mark if that use relates only to a particular product bearing the mark that you have legitimately purchased). The rationale behind the exception is that a trade mark owner should not be able to use their trade mark registration to control what others are permitted to do with their own physical property (e.g. people must be free to re-sell physical products and other property that they have legitimately purchased).
- Revocation or invalidity, i.e. if the mark is cancelled (e.g. for non-use or for invalidity). The rationale behind the exception is that a trade mark owner should not be able to use their trade mark registration to control what others are permitted to do: if they have ceased using that mark; or if the trade mark registration should have been refused and should never have been granted in the first place (e.g. because of an ‘absolute ground for refusal’ such as descriptiveness or lack of distinctiveness of the mark, or because of a ‘relative ground for refusal’ such as an earlier conflicting registered or unregistered right).
- Consent or acquiescence, i.e. if the owner has consented or acquiesced to your use of the mark. The rationale behind the exception is that the law should provide certainty and predictability where possible; therefore, a trade mark owner should not be able to prevent someone else from trading if the owner had previously consented or acquiesced to what they now complain is an infringement their rights.
In addition to the defences/exceptions set out above, you may still avoid a successful trade mark infringement claim if you can show that the mark owner has failed to make out their claim. For example:
- Consider ‘honest concurrent use’ g. if the trade mark owner’s claim is based on confusion, even if none of the above exceptions apply, it may instead be possible to show that you have also been operating under the same mark for a very long period of time (e.g. there are famously two beer companies, one from the Czech Republic and one from the US, operating under the “Budweiser” mark). The rationale here is that, in such situations involving honest concurrent use, a certain amount of confusion may be inevitable and may have to be tolerated (but such confusion will not amount to infringement of the owner’s trade mark rights).
- Consider ‘without due cause’ g. if the trade mark owner’s claim is based on reputation (i.e. detriment caused to their trade mark’s reputation or unfair advantage being taken of their trade mark’s reputation), even if none of the above exceptions apply, it may instead be possible to show that your use of the mark was justified in some way, such as in the case of parody, satire or political commentary (i.e. not ‘without due cause’ and therefore not an infringement of the owner’s trade mark rights).
A balance has to be struck between, on the one hand, the rights of businesses to protect their brands and, on the other hand, the rights of everyone else to speak freely in society and to compete fairly in the economy. However, before using an owner’s trade mark without permission, it’s also worth bearing the following three points in mind:
- First, just as the ‘default rule’ is not absolute, the exceptions/defences described above are not absolute either. The own name defence, the descriptive use defence and other defences are subject to certain caveats and conditions e.g. your own use must be “in accordance with honest practices in industrial or commercial matters” (e.g. you must not be acting in bad faith);
- Second, the commentary set out above relates to UK trade mark law only. However, trade marks are territorial rights and slightly different rules, exceptions and defences apply in different territories. This is of particular significance in the era of online global trade.
- Finally, the commentary set out above addresses trade mark law only. However, in practice, brand disputes often involve other areas of the law including copyright, design rights and passing off. In other words, even if you successfully establish that your use of someone else’s word, logo or other mark does not amount to trade mark infringement, it may still amount to copyright infringement, design right infringement or passing off.
Trade mark disputes can be expensive and time-consuming. Therefore, if you are considering any activity that might involve the use of someone else’s mark or other IP rights, it would be worth taking advice from a specialist IP lawyer as early as possible and ideally before any action is taken. If you would like to arrange a free consultation, please do not hesitate to get in touch with us.
